DECISION

Amazon.com, Inc. v. Ed Shafir

Claim Number:  FA0309000196119

PARTIES

Complainant is Amazon.com, Inc., Seattle, WA (“Complainant”) represented by Kevin Hayes, of Klarquist Sparkman, LLP., One World Trade Center, Suite 1600, 121 SW Salmon Street, Portland, OR  97204.  Respondent is Ed Shafir, 2070 East 18th Street,  Brooklyn, NY  11229 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amazonfurniture.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelists in this proceeding.

Honorable Paul A. Dorf (Ret.), Chair, Honorable Irving H. Perluss (Ret.), and Honorable Richard B. Wickersham (Ret.) as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 15, 2003; the Forum received a hard copy of the Complaint on September 17, 2003.

On September 22, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <amazonfurniture.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On September 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@amazonfurniture.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 22, 2003, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed  Honorable Paul A. Dorf (Ret.), Honorable Irving H. Perluss (Ret.), and Honorable Richard B. Wickersham (Ret.) as Panelists.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <amazonfurniture.com> domain name is confusingly similar to Complainant’s AMAZON mark.

2. Respondent does not have any rights or legitimate interests in the <amazonfurniture.com> domain name.

3. Respondent registered and used the <amazonfurniture.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is Fortune 500 company engaged in the business of  on-line retailing offering general merchandise and general consumer goods, an on-line commercial information directory, on-line advertising guide featuring the goods and services of other on-line vendors, among other services.  Complainant incorporated its business in 1994 in the State of Washington and began operating its website in July, 1995.  Complainant then reincorporated in 1996 in the State of Delaware.  Complainant operates several global websites to offer their goods and services.

Complainant owns a number of trademark registrations for the AMAZON.COM mark in the United States and internationally. Complainant registered its first trademark with the U.S. Patent and Trademark Office (“USPTO”) for the AMAZON.COM mark (Reg. No. 2,078,496) on July 15, 1997 related to computerized on-line ordering services, featuring the wholesale and retail distribution of books.

In April, 2000, Complainant launched a new Lawn & Patio store, which featured patio furniture.  In May, 2000 Complainant added the “Home Living” store, which feature furniture and other household accessories. 

The Respondent appears to also be engaged in the on-line retail business, featuring furniture and household accessories on its website. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established its rights in the domain name at issue through registration of its mark with the USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

The domain name at issue confusingly similar to Complainant’s famous mark. The dominant feature of the disputed domain name is Complainant’s famous AMAZON mark, and the addition of the word “furniture,” which describes a product supplied by Complainant under its mark, does not dispell any confusing similarity between the domain name and the mark. See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law).

Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

A review of the evidence presented reveals that Respondent is operating an online furniture shop under the name “Amazon Furniture”.   This places Respondent in direct competition with Complainant, who also sells furniture under its famous mark, and misappropriates the goodwill Complainant has built up around the mark. Respondent’s activities at the disputed domain name are neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant).

Further, Respondent, despite claiming to be known as “Amazon Furniture” when registering the domain name at issue used “Ed Shafir” in its WHOIS contact information. No evidence has been presented indicating that the Respondent had been licensed or authorized to use Complainant’s famous mark.  As the Respondent has not been licensed or authorized to operate under that mark, the Panel concludes that Respondent is not “commonly known by” the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Given the fame and goodwill surrounding Complainant’s famous mark, coupled with Complainant’s registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, Respondent’s registration of the disputed domain name was done in bad faith. As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <amazonfurniture.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Chair

Honorable Richard B. Wickersham (Ret.), Panelist

Honorable Irving H. Perluss (Ret.), Panelist

Dated:  November 10, 2003

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